Conde Nast Publications Pty Ltd v Taylor

FEDERAL COURT OF AUSTRALIA

TRADE MARKS – application for registration of mark “EUROVOGUE” – opposition to application by proprietor of registered mark “VOGUE” – appeal from decision of Registrar dismissing opposition – whether mark likely to deceive or cause confusion – absence of evidence of actual confusion or deception after registration – appearance of mark as seen in ordinary course of trade – relevance of circumstances in which goods are bought – deceptive similarity.

Trade Marks Act 1955, ss 28(a), 33
Trade Marks Act 1995, s 241(2)

Johnson & Johnson v Kalnin (1993) 26 IPR 435, applied
In the Matter of an Application by Alex. Pirie and Sons Ld. to Register a Trade Mark (1933) 50 RPC 147, applied
Southern Cross Refrigerating Company v Toowoomba Foundry Proprietary Limited (1953) 91 CLR 592, applied
Polo Textile Industries Pty Limited v Domestic Textile Corporation Pty Limited (1993) 42 FCR 227, distinguished
Jafferjee v Scarlett (1937) 57 CLR 115, applied
Mars GB Ltd v Cadbury Ltd [1987] RPC 387, referred to
In the Matter of London Lubricants(1920) Limited’s Application to Register a Trade Mark (1925) 42 RPC 264, applied
Carnival Cruise Lines Inc v Sitmar Cruises Ltd (1994) 31 IPR 375, applied
In the Matter of an Application by Smith Hayden & Coy., Ld. (1945) 63 RPC 97, applied

CONDE NAST PUBLICATIONS PTY LIMITED v VIRGINIA TAYLOR

NG 659 of 1996

Burchett J
Sydney
24 July 1998

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 659  of   1996

BETWEEN:	CONDE NAST PUBLICATIONS PTY LIMITED Applicant
AND:	VIRGINIA TAYLOR Respondent
JUDGE:		BURCHETT
DATE OF ORDER:		24 July 1998
WHERE MADE:		SYDNEY

THE COURT ORDERS THAT:

The application be dismissed with costs.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	NG 659 of 1996

BETWEEN:	CONDE NAST PUBLICATIONS PTY LIMITED Applicant
AND:	VIRGINIA TAYLOR Respondent

JUDGE:	BURCHETT j
DATE:	24 july 1998
PLACE:	SYDNEY

REASONS FOR JUDGMENT

This is an appeal, as it is called, under the Trade Marks Act 1955, from a decision of a hearing officer of the Registrar of Trade Marks dismissing the applicant’s opposition to the respondent’s application for registration of a trade mark in respect of “ladies’ clothing and men’s casual wear”. The mark combines a double shield surmounted by complicated decorations and bearing the letters “EV” with the word in block letters “EUROVOGUE”. This embellished composite is represented in the mark in the following manner:

The opposition maintained by the applicant relies on ss 28(a) and 33 of the Act. The respondent’s application for registration was filed on 27 February 1991, and had been accepted prior to 1 January 1996. Accordingly, by operation of s 241(2) of the Trade Marks Act 1995, the Trade Marks Act 1955 (“the Act”) applies to these proceedings.

Section 28(a) provides:

“A mark:

(a)      the use of which would be likely to deceive or cause…